Home Box Office, Inc. v. Cody Thompson
Claim Number: FA1402001541930
Complainant is Home Box Office, Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Cody Thompson (“Respondent”), Florida, US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <entouragemovie.com> and <entouragefilm.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2014; the National Arbitration Forum received payment on February 3, 2014.
On February 3, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <entouragemovie.com> and <entouragefilm.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@entouragemovie.com and postmaster@entouragefilm.com. Also on February 3, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. At least as early as 2004, Complainant adopted and began using the ENTOURAGE mark in connection with an acclaimed comedy-drama television series. See Annex D. Complainant has used and continues to use the famous and distinctive ENTOURAGE mark in interstate commerce in connection with the advertising, promotion, and sale of a wide variety of goods and services related to the ENTOURAGE television series.
b. In October 2013, Complainant announced that it was working on a movie adaptation of the ENTOURAGE television series. Press coverage concerning the movie was significant.
c. Complainant holds registrations for the ENTOURAGE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,235,828 registered May 1, 2007).
d. Respondent’s <entouragemovie.com> and <entouragefilm.com> domain names are confusingly similar to Complainant’s ENTOURAGE mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is not licensed or authorized to use the ENTOURAGE mark, and Respondent is not named or commonly known as “Entourage.”
3. Policy ¶ 4(a)(iii)
a. Respondent has attempted to sell the <entouragemovie.com> and <entouragefilm.com> domain names in bad faith.
i. On May 22, 2013, Respondent’s attorney sent an unsolicited e-mail to Complainant’s sister company, Warner Bros. Studios, offering to sell <entouragemovie.com> on behalf of his client. See Annex F. During the ensuing exchange, Respondent’s counsel offered to sell both disputed domain names for $50,000 and a guarantee that his client would be given a role as an extra in the ENTOURAGE movie. Id.
b. Respondent uses the disputed domain names to resolve to commercial websites that include links to third-party sites, several of which refer to Complainant and its ENTOURAGE series. See Annex G. Such use illustrates bad faith under Policy ¶¶ 4(b)(iii) and 4(b)(iv).
c. Respondent registered the disputed domain names based on speculation that a motion picture would be created based on Complainant’s ENTOURAGE series.
i. Respondent registered <entouragemovie.com> on December 3, 2009, contemporaneously with an initial media report of an ENTOURAGE movie being made.
ii. On October 28, 2013, around the same time the press began publishing information about plans to move forward with the production of a major motion picture based on Complainant’s series, Respondent’s attorney – Darren Heitner – posted a Twitter message that his client’s <entouragemovie.com> domain name “just became a little more valuable.” In that same message Mr. Heitner also notes that his client registered <entouragefilm.com>.
d. Respondent registered the disputed domain names with knowledge of Complainant and its rights in the ENTOURAGE mark.
i. Respondent is deemed to have had at least constructive knowledge of Complainant’s rights by virtue of the federal trademark registrations that were in existence when Respondent registered the disputed domains.
ii. Complainant’s ENTOURAGE TV series had become popular prior to Respondent’s registration of the domains.
iii. Respondent’s own attorney publicly acknowledged that his client registered the domain names on speculation about an upcoming ENTOURAGE movie.
4. Respondent registered <entouragemovie.com> on December 3, 2009 and <entouragefilm.com> on January 22, 2013.
B. Respondent
Respondent failed to submit a response in this proceeding.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to have adopted and begun using the ENTOURAGE mark in connection with an acclaimed comedy-drama television series at least as early as 2004. See Annex D. Complainant states that it continues to use the famous and distinctive ENTOURAGE mark in interstate commerce in connection with the advertising, promotion, and sale of a wide variety of goods and services related to the ENTOURAGE television series. Complainant also provides evidence of its registration of the ENTOURAGE mark with the USPTO (e.g., Reg. No. 3,235,828 registered May 1, 2007). In light of Complainant’s USPTO registrations, the Panel determines that Complainant has established rights in the ENTOURAGE mark pursuant to Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant argues that Respondent’s <entouragemovie.com> and <entouragefilm.com> domain names are confusingly similar to Complainant’s ENTOURAGE mark. Complainant contends that the terms “movie” and “film” are descriptive of its mark, as there have been media reports of an ENTOURAGE movie being made dating back to 2009. In October 2013, Complainant confirmed that it was working on a movie adaptation of the ENTOURAGE television series. According to Complainant, press coverage of this announcement was significant. Previous panels have held that a respondent’s addition of words directly related to the complainant’s mark in forming a disputed domain name do not overcome confusing similarity. See, e.g., Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The Panel further notes that each disputed domain name adds the “.com” suffix, but considers this addition irrelevant to its Policy ¶ 4(a)(i) analysis. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Consequently, the Panel finds the <entouragemovie.com> and <entouragefilm.com> domain names to be confusingly similar to Complainant’s ENTOURAGE mark for the purposes of Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that it has not licensed or authorized Respondent’s use of the ENTOURAGE mark, and that Respondent is not named or commonly known as “Entourage.” The Panel notes that the WHOIS information identifies Respondent as “Cody Thompson,” which bears no resemblance to the disputed domain names. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name because the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. The immediate Panel notes that Respondent in this case has similarly failed to provide any evidence to supports its rights under Policy ¶ 4(a)(ii). Accordingly, the Panel concludes that Respondent is not commonly known by <entouragemovie.com> or <entouragefilm.com> within the meaning of Policy ¶ 4(c)(ii).
Although Complainant makes no contentions with regard to Policy ¶¶ 4(c)(i) or 4(c)(iii), the Panel notes that Complainant does make allegations concerning Respondent’s use of the disputed domain names under the Complaint’s Policy ¶ 4(a)(iii) section. Specifically, Complainant alleges that Respondent uses the disputed domain names to resolve to commercial websites that include links to third-party sites, several of which refer to Complainant and its ENTOURAGE series. See Annex G. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), explained that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it is not using the at-issue domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel here similarly reasons that Respondent’s use of the <entouragemovie.com> and <entouragefilm.com> domain names does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
According to Complainant, Respondent has attempted to sell the <entouragemovie.com> and <entouragefilm.com> domain names in bad faith. Complainant asserts that on May 22, 2013, Respondent’s attorney sent an unsolicited email to Complainant’s sister company, Warner Bros. Studios, offering to sell <entouragemovie.com> on behalf of his client. See Annex F. During the ensuing exchange, Complainant says that Respondent’s counsel offered to sell both disputed domain names in exchange for $50,000 and a guarantee that his client would be given a role as an extra in the ENTOURAGE movie. Id. Complainant views Respondent’s solicitation of Warner Bros. and subsequent offer as evidence that Respondent registered the disputed domain names in order to capitalize on the value of Complainant’s mark through the eventual sale of the domains. Past panels have found bad faith where a respondent registers an infringing domain name for the primary purpose of selling the domain at a later date. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). The Panel therefore concludes that Respondent registered the <entouragemovie.com> and <entouragefilm.com> domain names in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant contends that Respondent’s use of the disputed domain names to commercial websites that include links to third-party sites, several of which refer to Complainant and its ENTOURAGE series, illustrates bad faith under Policy ¶ 4(b)(iii). The Panel notes that Complainant’s Annex G depicts the disputed domain names displaying a number of links, including links to “Netflix Movie & TV Shows,” “Watch TV Episodes Online,” and “Watch Movies Online.” As the Panel opines that these links compete with Complainant’s business under its mark, the Panel holds that Respondent’s registration and use of domain names incorporating Complainant’s ENTOURAGE mark to host such competing links disrupt Complainant’s business in bad faith according to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further contends that Respondent’s use of the disputed domain names to host websites featuring commercial links illustrates bad faith under Policy ¶ 4(b)(iv). Again, Complainant claims that Respondent’s websites link to third-party sites, several of which refer to Complainant and its ENTOURAGE series. The Panel reasons that Respondent registered the confusingly similar <entouragemovie.com> and <entouragefilm.com> domain names in order to create confusion with Complainant. As the Panel believes that Respondent intentionally created such confusion in an attempt to draw greater Internet traffic to its sites and realize greater commercial gain through pay-per-click revenues, the Panel finds that Respondent registered and uses the disputed domain names in bad faith according to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant also alleges bad faith based on its theory that Respondent registered the disputed domain names in response to speculation that a motion picture would be created based on Complainant’s ENTOURAGE series. According to Complainant, Respondent registered <entouragemovie.com> on December 3, 2009, contemporaneously with an initial media report of an ENTOURAGE movie being made. Complainant adds that on October 28, 2013, around the same time the press began publishing information about plans to move forward with the production of a major motion picture based on Complainant’s series, Respondent’s attorney – Darren Heitner – posted a Twitter message that his client’s <entouragemovie.com> domain name “just became a little more valuable.” In that same message, Complainant says Mr. Heitner also noted that his client registered <entouragefilm.com>. The Panel notes that Complainant has apparently failed to include evidence of this Twitter message in its Complaint and Annexes. The Panel nonetheless accepts Complainant’s premise, that Respondent registered the disputed domain names in opportunistic bad faith. In Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000), the panel found opportunistic bad faith based on the respondent’s registration of an infringing domain name, which corresponded to a public announcement that complainant was changing its name from Tandy Corporation to Radio Shack, on the same day the announcement was made. As this Panel similarly finds that Respondent’s registrations of the <entouragemovie.com> and <entouragefilm.com> domain names corresponded to speculation and formal announcement, respectively, of the development of an ENTOURAGE movie, the Panel finds that Respondent registered the domains opportunistically and in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered the disputed domain names with knowledge of Complainant and its rights in the ENTOURAGE mark. Complainant urges that Respondent should be deemed to have had at least constructive knowledge of Complainant’s rights by virtue of the federal trademark registrations that were in existence when Respondent registered the disputed domains. Complainant posits that Respondent’s actual knowledge is demonstrated by the popularity of Complainant’s ENTOURAGE series at the time of Respondent’s registration, coupled with Respondent’s attorney’s public acknowledgement via Twitter that his client registered the domain names on speculation about an upcoming ENTOURAGE movie. While panels have concluded that constructive notice is not sufficient to support a finding of bad faith, the Panel finds that sufficient evidence exists in the record to support Respondent’s actual knowledge of Complainant and its rights. As the Panel finds such actual knowledge, the Panel holds that Respondent registered the <entouragemovie.com> and <entouragefilm.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <entouragemovie.com> and <entouragefilm.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 11, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page